Only the Westlaw citation is currentlyavailable.

United States Court of Appeals,Federal Circuit.

EPOS TECHNOLOGIES LTD., Plaintiff/Counterclaim Defendant–Appellee,

andDane–Elec S.A., Dane–Elec Memory

S.A., and Dane–Elec Corporation USA,Counterclaim Defendants,

v.PEGASUS TECHNOLOGIES LTD., De-

fendant/Counterclaimant–Appellant,and

Luidia, Inc., Counterclaimant–Appellant.

No. 2013–1330.Sept. 5, 2014.

Background: Competitor brought actionagainst patentee, seeking declaratoryjudgment that its accused products didnot infringe patents related to digitalpens. Patentee counterclaimed alleginginfringement. The United States DistrictCourt for the District of Columbia, Willi-am M. Nickerson, J., 802 F.Supp.2d 39,construed the claims, and granted sum-mary judgment of invalidity and nonin-fringement, 916 F.Supp.2d 88. Patenteeappealed.

Holdings: The Court of Appeals, Hughes, Circuit Judge, held that:(1) term, “drawing implement,” in patentscontemplating a device that attaches to aconventional marker, pen, or the like,preferably a dry-erase marker, meant awriting utensil that can be used alone ortogether with the invention;(2) term, “given time interval,” in patentsrelated to a system developed to converthandwritten markings into a digital imagefor display, storage, or further manipula-tion, could not be fixed at a few secondsor less;

(3) term, “marking implement,” in patentrelating to digital pens that were portableand usable with any writing surface,could not be limited to “marker” or ex-clude “pen tip”;(4) term, “temporary attachment,” in pat-ent directed to “graphic dataacquisitionsystem” with “retrofittable apparatus forconverting a substantially planar surfaceinto an electronic data capture device,”could not be limited to retrofittable ap-paratus; and(5) inquiry as to whether competitor's ac-cused products infringed under equival-ents doctrine could not be limited towhether accused product had ultrasonicreceiver or transmitter device for receiv-ing or transmitting intermittent ultra-sound signal, as claimed by patent relatedto presentation board digitizers.

Reversed in part, vacated in part, andremanded.

West Headnotes

[1] Patents 291 324.5

291 Patents291XII Infringement

291XII(B) Actions291k324 Appeal

291k324.5 k. Scope and Ex-tent of Review in General. Most CitedCases

Patent claim construction is a legalstatement of the scope of the patent rightthat is reviewed de novo.

[2] Patents 291 161

291 Patents291IX Construction and Operation of

Letters Patent291IX(A) In General

291k161 k. State of the Art.Most Cited Cases

Patent claim terms generally are given

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their ordinary and customary meaning asunderstood by a person of ordinary skillin the art.

[3] Patents 291 161

291 Patents291IX Construction and Operation of

Letters Patent291IX(A) In General

291k161 k. State of the Art.Most Cited Cases

Patents 291 167(1)

291 Patents291IX Construction and Operation of

Letters Patent291IX(B) Limitation of Claims

291k167 Specifications, Draw-ings, and Models

291k167(1) k. In General.Most Cited Cases

During patent claim construction, aperson of ordinary skill in the art isdeemed to read a claim term not only inthe context of the particular claim inwhich the disputed term appears, but inthe context of the entire patent, includingthe specification.

[4] Patents 291 165(3)

291 Patents291IX Construction and Operation of

Letters Patent291IX(B) Limitation of Claims

291k165 Operation and Effectof Claims in General

291k165(3) k. Constructionof Language of Claims in General. MostCited Cases

Patents 291 167(1.1)

291 Patents291IX Construction and Operation of

Letters Patent291IX(B) Limitation of Claims

291k167 Specifications, Draw-ings, and Models

291k167(1.1) k. Specifica-tion as Limiting or Enlarging Claims.Most Cited Cases

Reading limitations from a preferredembodiment described in the specifica-tion, even if it is the only embodiment,into the claims is improper absent a clearindication in the intrinsic record that thepatentee intended the claims to be so lim-ited; although the distinction between in-terpreting the meaning of a claim and im-porting limitations into the claim can be adifficult one to apply in practice, the con-struction that stays true to the claim lan-guage and most naturally aligns with thepatent's description of the invention willbe, in the end, the correct construction.

[5] Courts 106 96(7)

106 Courts106II Establishment, Organization,

and Procedure106II(G) Rules of Decision

106k88 Previous Decisions asControlling or as Precedents

106k96 Decisions of UnitedStates Courts as Authority in OtherUnited States Courts

106k96(7) k. ParticularQuestions or Subject Matter. Most CitedCases

In a patent case, the Court of Appealsfor the Federal Circuit reviews a grant ofsummary judgment under the law of theregional circuit. Fed.Rules Civ.Proc.Rule56(a), 28 U.S.C.A.

[6] Patents 291 314(5)

291 Patents291XII Infringement

291XII(B) Actions291k314 Hearing

291k314(5) k. Questions ofLaw or Fact. Most Cited Cases

Patent infringement is a question offact.

[7] Patents 291 324.55(5)

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291 Patents291XII Infringement

291XII(B) Actions291k324 Appeal

291k324.55 Questions ofFact, Verdicts, and Findings

291k324.55(5) k. Issuesof Infringement. Most Cited Cases

On appeal from a grant of summaryjudgment of noninfringement, the Courtof Appeals must determine, after resolv-ing reasonable factual inferences in favorof the patentee, whether the district courtcorrectly concluded that no reasonablejury could find infringement. Fed.RulesCiv.Proc.Rule 56(a), 28 U.S.C.A.

[8] Patents 291 101(2)

291 Patents291IV Applications and Proceedings

Thereon291k101 Claims

291k101(2) k. Construction inGeneral. Most Cited Cases

Term “drawing implement,” in pat-ents contemplating a device that attachesto a conventional marker, pen, or the like,preferably a dry-erase marker, meant awriting utensil that can be used alone ortogether with the invention.

[9] Patents 291 101(2)

291 Patents291IV Applications and Proceedings

Thereon291k101 Claims

291k101(2) k. Construction inGeneral. Most Cited Cases

Term “given time interval,” in patentsrelated to a system developed to converthandwritten markings into a digital imagefor display, storage, or further manipula-tion, could not be fixed at a few secondsor less; limiting term “given time inter-val” to “a few seconds or less” erro-neously imported limitation from pre-ferred embodiment.

[10] Patents 291 101(2)

291 Patents291IV Applications and Proceedings

Thereon291k101 Claims

291k101(2) k. Construction inGeneral. Most Cited Cases

Term “marking implement,” in patentrelating to digital pens that were portableand usable with any writing surface,could not be limited to “marker” or ex-clude “pen tip”; pen or pencil, not just a“marker” or an implement with “markertip,” could mark surfaces, specificationinterchangeably referred to “marking im-plement” as “marker” and as a “pen,” andit also referred to marking implement'stip as a “pen tip” and taught that markingimplement could perform “eraser func-tion.”

[11] Patents 291 101(2)

291 Patents291IV Applications and Proceedings

Thereon291k101 Claims

291k101(2) k. Construction inGeneral. Most Cited Cases

Term “temporary attachment,” in pat-ent directed to “graphic dataacquisitionsystem” with “retrofittable apparatus forconverting a substantially planar surfaceinto an electronic data capture device,”could not be limited to retrofittable ap-paratus, since it read out preferred em-bodiments, such as sensor array that “isaffixed to a clip-on bracket” and whensensor an array is “associated therewith”to a bracket having a complementarychannel to a wall-mounted bracket.

[12] Patents 291 165(4)

291 Patents291IX Construction and Operation of

Letters Patent291IX(B) Limitation of Claims

291k165 Operation and Effect

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of Claims in General291k165(4) k. Reading Lim-

itations or Elements Into Claims, or Dis-regarding Limitations or Elements. MostCited Cases

A patent claim construction that ex-cludes a preferred embodiment is rarely,if ever correct and would require highlypersuasive evidentiary support.

[13] Patents 291 237

291 Patents291XII Infringement

291XII(A) What Constitutes In-fringement

291k233 Patents for Machinesor Manufactures

291k237 k. Substitution ofEquivalents. Most Cited Cases

Inquiry as to whether competitor's ac-cused products infringed under equival-ents doctrine could not be limited towhether accused product had ultrasonicreceiver or transmitter device for receiv-ing or transmitting intermittent ultra-sound signal, as claimed by patent relatedto presentation board digitizers, sincebinary choice of continuous or intermit-tent was not compelled by patent and re-cord evidence; court had to consider pat-entee's expert declaration explaining whyaccused products' signals were equivalentto claimed intermittent ultrasound signaland court had to more thoroughly con-sidered whether reasonable jury couldhave concluded that intermittent and con-tinuous signals were equivalent.

[14] Patents 291 237

291 Patents291XII Infringement

291XII(A) What Constitutes In-fringement

291k233 Patents for Machinesor Manufactures

291k237 k. Substitution ofEquivalents. Most Cited Cases

When addressing the equivalents doc-

trine, a court must ask whether an asser-ted equivalent is an insubstantial differ-ence from the claimed element, or wheth-er it matches the function, way, and resultof the claimed element; a court should becautious to not shortcut this inquiry byidentifying a binary choice in which anelement is either present or not present.

Patents 291 328(2)

291 Patents291XIII Decisions on the Validity,

Construction, and Infringement of Partic-ular Patents

291k328 Patents Enumerated291k328(2) k. Original Utility.

Most Cited Cases

Patents 291 328(2)

291 Patents291XIII Decisions on the Validity,

Construction, and Infringement of Partic-ular Patents

291k328 Patents Enumerated291k328(2) k. Original Utility.

Most Cited Cases6,266,051, 6,326,565, 6,501,461,

6,841,742. Construed.

6,392,330, 6,724,371. Cited.

Appeal from the United States DistrictCourt for the District of Columbia in No.07–CV–0416, Judge William M. Nicker-son.Deanne E. Maynard, Morrison & Fo-erster LLP, of Washington, DC, arguedfor plaintiff/counterclaim Defendant-ap-pellee. With her on the brief were An-thony L. Press, Hector G. Gallegos,Wendy J. Ray, and Christian G. An-dreu–Von Euw, of Los Angeles, CA.

William P. Atkins, Pillsbury WinthropShaw Pittman LLP, of McLean, VA, ar-gued for defendant/counter-claimant-appellant and counter-claimantappellant. With him on the briefwere Christopher K. Dorsey, and A. John

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Demarco, of Washington, DC.

HUGHES and BRYSON, Circuit Judges.FN*

HUGHES, Circuit Judge.*1 Appellants, Pegasus Technologies

Ltd. and Luidia, Inc., own several patentsrelating to digital pens and receiverdevices which, they allege, the Appelleeshave infringed. Following claim con-struction of certain terms in the patents,the district court granted summary judg-ment of noninfringement in favor of Ap-pellees. Because we conclude that thedistrict court erred in construing fourclaim terms and in granting summaryjudgment of noninfringement, we vacate-in-part, reverse-in-part, and remand forfurther proceedings consistent with thisopinion.

IAppellants allege infringement of six

patents: U.S. Patent Nos. 6,266,051;6,326,565; 6,392,330; 6,501,461;6,724,371; and 6,841,742. The patents re-late to pens that digitize writing anddevices for retrofitting writing surfacesso that writing can be digitally captured.See, e.g., '371 patent col. 1 ll. 6–9. TheAppellees, EPOS Technologies Ltd.,Dane–Elec S.A., Dane–Elec MemoryS.A., and Dane–Elec Corp. USA(collectively, EPOS), manufacture andsell products used to digitize writing(EPOS Products). These products includea receiver unit with a spring-loaded, U-shaped clip-on bracket and a pen refill.

In 2007, EPOS Technologies Ltd.filed a complaint against Pegasus Tech-nologies Ltd. seeking declaratory judg-ment of noninfringement of the '565,'330, '371, and '742 patents. Pegasus filedan answer and counterclaims, adding Lu-idia, Inc. as a counterclaim plaintiff(collectively, Pegasus). Pegasus also as-

serted infringement of two additional pat-ents in its counterclaims, the '051 and '461 patents, resulting in a total of six as-serted patents. After claim construction,EPOS moved for summary judgment ofinvalidity and noninfringement. The dis-trict court granted the motion and de-clined to address invalidity in light of itsnonfringement rulings. Pegasus appealsthe district court's construction of fourclaim terms and the district court's grantof summary judgment of noninfringe-ment. We have jurisdiction under 28U.S.C. § 1295(a)(1).

II[1][2][3][4] “Claim construction is a

legal statement of the scope of the patentright” that we review de novo. LightingBallast Control LLC v. Philips Elecs. N.Am. Corp., 744 F.3d 1272, 1276–77,1284 (Fed.Cir.2014) (en banc); CyborCorp. v. FAS Techs., Inc., 138 F.3d 1448,1456 (Fed.Cir.1998) (en banc). Claimterms are generally given their ordinaryand customary meaning as understood bya person of ordinary skill in the art. Phil-lips v. AWH Corp., 415 F.3d 1303,1312–13 (Fed.Cir.2005) (en banc). Theperson of ordinary skill in the art is“deemed to read the claim term not onlyin the context of the particular claim inwhich the disputed term appears, but inthe context of the entire patent, includingthe specification.” Id. at 1313. On theother hand, “it is improper to read limita-tions from a preferred embodiment de-scribed in the specification—even if it isthe only embodiment—into the claimsabsent a clear indication in the intrinsicrecord that the patentee intended theclaims to be so limited.”Liebel–Flarsheim v. Medrad, Inc., 358F.3d 898, 913 (Fed.Cir.2004). We recog-nize that “the distinction between ... in-terpret[ing] the meaning of a claim andimporting limitations ... into the claimcan be a difficult one to apply in prac-tice.” Phillips, 415 F.3d at 1323. Never-

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theless, “[t]he construction that stays trueto the claim language and most naturallyaligns with the patent's description of theinvention will be, in the end, the correctconstruction.” Id. at 1316 (citation omit-ted) (quotation omitted).

*2 [5] We review a grant of summaryjudgment under the law of the regionalcircuit, here the D.C. Circuit. CharlesMach. Works, Inc. v. Vermeer Mfg. Co.,723 F.3d 1376, 1378 (Fed.Cir.2013). TheD .C. Circuit reviews a district court'sgrant of summary judgment de novo, Co-alition for Common Sense in GovernmentProcurement v. United States, 707 F.3d311, 315 (D.C.Cir.2013), drawing allreasonable inferences in favor of the non-movant, Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 255, 106 S.Ct. 2505, 91L.Ed.2d 202 (1986). Summary judgmentis appropriate when there is “no genuinedispute as to any material fact and themovant is entitled to judgment as a matterof law.” Fed.R.Civ.P. 56(a).

[6][7] Infringement is a question offact. Charles Machine, 723 F.3d at 1378.On appeal from a grant of summary judg-ment of noninfringement, “we must de-termine whether, after resolving reason-able factual inferences in favor of the pat-entee, the district court correctly con-cluded that no reasonable jury could findinfringement.” Id. (quoting Crown Pack-aging Tech., Inc. v. Rexam Beverage CanCo., 559 F.3d 1308, 1312 (Fed.Cir.2009))(internal quotation marks omitted).

III[8] Pegasus appeals the district court's

construction of “drawing implement” and“given time interval” in the '565 and '742patents, “marking implement” in the '461patent, and “temporary attachment” in the'051 patent. The district court erroneouslyconstrued these four terms. Because ofthe erroneous claim constructions, thedistrict court erred by granting summary

judgment of noninfringement of the '565,'742, '461, and '051 patents.

AThe '565 and '742 patents relate to di-

gitizing writing on presentation boards.The '742 patent discloses a transmitterdevice for use with conventional writingimplements. '742 patent abstract, col. 2 ll.29–41. The '565 patent addresses dataloss caused by a data transmission delayafter the end of each pen stroke or resyn-chronization delay. '565 patent col. 4 ll.58–61. According to the '565 patent, thisdelay is particularly problematic for shortstrokes because it may cause some of theinformation conveyed by the stroke to notbe recorded. '565 patent col. 4 ll. 54–57.The '565 patent addresses this problem by“maintaining synchronization betweenthe transmitter device 40 and the receiversystem for a given period of time afterthe end of each pen stroke.” '565 patentcol. 4 ll. 58–61.

Claim 1 of the '565 patent and claim 2of the '742 patent are representative.Claim 1 of the '565 patent recites:

A transmitter device for use with a sys-tem for digitizing operative strokes of ahandheld drawing implement, the draw-ing implement having a body and an op-erative tip, the transmitter device com-prising:

a housing;

a transmitter mounted relative to saidhousing;

a microswitch that is responsive to aforce exerted on the operative tip ofthe drawing implement towards saidhousing;

*3 electronic circuitry responsive tosaid microswitch to affect operationof said transmitter, wherein said elec-tronic circuitry operates said transmit-

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ter for a given time interval after saidmicroswitch ceases to indicate a forceexerted on said housing towards theoperative tip of the drawing imple-ment.

'565 patent col. 6 ll. 34–49 (emphasesadded). Claim 2 of the '742 patent recites:

A system for digitizing operativestrokes of a drawing implement com-prising a body, a back end, and a frontend opposite the back end comprisingan operative tip, the system comprising:

at least one ultrasound receiver as-sembly;

a housing comprising a substantiallycylindrical opening terminating at afirst end, and an inner housing surfacehaving a central bore, the housing re-ceiving a portion of the drawing im-plement, the operative tip extendingthrough the central bore;

a retainer attachable to a second endof the opening to retain the drawingimplement within the housing, the re-tainer having a spring element for bi-asing the drawing implement towardsthe inner housing surface; and an ul-trasound transmitter mounted relativeto the housing proximal the centralbore.

'742 patent col. 14 ll. 8–23 (emphasesadded).

1The district court construed “drawing

implement” as “a conventional writingutensil that can be used alone or togetherwith the invention.” EPOS Techs. Ltd. v.Pegasus Techs. Ltd., 802 F.Supp.2d 39,49 (D.D.C.2011) (emphasis added). Indoing so, the district court explained thatthe language of the claims is“exceedingly broad,” but that the re-mainder of the patent is not “so broad asto contemplate using something like ‘a

piece of charcoal.’ “ Id. The district courtstated that the construction should recog-nize that a drawing implement “is astand-alone writing utensil, in the sensethat it is a writing utensil that can be usedas such.” Id.

The correct construction of the term“drawing implement” should include “awriting utensil that can be used alone ortogether with the invention.” But the cor-rect construction also should exclude theword “conventional.” The claims them-selves only state that a drawing imple-ment must have at least a “body” and an“operative tip.” '565 patent col. 6 ll. 37; '742 patent col. 14 ll. 8–10. The claims donot state that the “drawing implement”must be “conventional” or exclude apiece of charcoal. Further, the specifica-tions describe drawing implements of “arange of lengths and widths” and of “anysize or shape.” See, e.g., '565 patent col.4 ll. 15–16, col. 4 ll. 21–22; '742 patentcol. 8 ll. 13–14, col. 8 l. 19. Also, thespecifications expressly disclose a varietyof drawing implements such as“conventional writing implements,” a“hand held drawing implement,” a “dryerase marker,” a “red or blue pen,” andan “eraser.” See, e.g., '565 patent col. 2 l.37, col. 5 l. 56, col. 6 ll. 6–11; '742 patentcol. 3 ll. 30–31.

*4 The district court erred by import-ing the word “conventional” from pre-ferred embodiments into its constructionof the term. See Liebel–Flarsheim, 358F.3d at 913. Although it is true that thespecifications recite embodiments includ-ing “conventional” writing implements,there is no clear indication in the intrinsicrecord suggesting that the claims are lim-ited to “conventional” drawing imple-ments. Because the district court erred byincluding the word “conventional” in itsconstruction of the term “drawing imple-ment,” we vacate its construction of theterm.

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The district court determined that be-cause “no reasonable jury could find thatpen refills used in the EPOS Products are‘drawing implement[s]’ as that term hasbeen construed, EPOS is entitled to sum-mary judgment.” EPOS Techs. Ltd. v. Pe-gasus Techs. Ltd., 916 F.Supp.2d 88, 93(D.D.C.2013). But because the “drawingimplement” need not be “conventional,”the district court erred by granting sum-mary judgment of noninfringement.

In considering infringement, a reason-able jury might find that a pen refillmeets the “drawing implement” limita-tion as properly construed. For example,a reasonable jury might find that a pen re-fill meets the “drawing implement” limit-ation because the specifications disclosethat “[t]he invention ... may be used withreplaceable conventional pen elements.” '742 patent col. 5 ll. 24–27 (emphasis ad-ded); see also '565 patent col. 3 ll. 17–20.Moreover, even if the pen refill does notliterally satisfy the claim term, a jurymight find infringement on the basis thata pen refill satisfies this claim limitationunder the doctrine of equivalents. Ac-cordingly, we reverse the grant of sum-mary judgment of noninfringement.

2[9] The district court construed

“given time interval” as “fixed at a fewseconds or less.” EPOS, 802 F.Supp.2d at48. The district court explained that,“while the words of the claims do notlimit the time interval, all evidence sug-gests there must be some upper-bound tothe interval contemplated by the pat-entee.” Id. According to the district court,an upper bound was required because thepatents sought to solve the problem ofquick pen strokes made in rapid succes-sion. Id. The district court found no evid-ence that the problem the patents soughtto solve extended to pen strokes madeafter longer periods of time. Id.

The patents do not require an upperbound of “a few seconds or less” on the“given time interval.” Instead, the patentsdescribe and claim embodiments withtime intervals that can “preferably” or“typically” be used and with lower-boundtime intervals. '742 patent col. 11 ll.41–43; '565 patent col. 5 ll. 2–4, col. 6 ll.50–51.

Although the word “given” may in-dicate that a time interval is fixed, spe-cified, or predetermined by an operator ora programmer, the intrinsic evidence doesnot limit “given time interval” to “fixedat a few seconds or less.” By limiting theterm “given time interval” to “a fewseconds or less,” the district court erro-neously imported a limitation from a pre-ferred embodiment. See LiebelFlarsheim,358 F.3d at 913. Moreover, we have con-sidered EPOS's arguments regarding itsconstruction of this term, including theindefiniteness arguments, and find themunpersuasive. We thus vacate the districtcourt's construction of “given time inter-val.”

*5 In light of its claim construction,and because neither party disputed thatthe EPOS Products operated for 25seconds after ceasing to detect input, thedistrict court determined that EPOS wasentitled to summary judgment of nonin-fringement. EPOS, 916 F.Supp.2d at93–94. The district court's grant of themotion was in error because it was basedon an improperly limited construction of“given time interval.” Thus, we reversethe grant of summary judgment of nonin-fringement.

B[10] The '461 patent relates to digital

pens that are portable and usable with anywriting surface. '461 patent col. 3 ll.20–44. It discloses an “improved fittingtechnique that allows rapid and efficientretrofit of a tracking assembly ... that ac-

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curately tracks a writing implement ...[and] captur[es] all marks placed on themarking surface.” '461 patent col. 3 ll.37–44. According to the patent, retrofit-ting is not trivial because of the“difficulty of attaining accurate trackingof a marking implement to capture posi-tion information that may be converted toa precision representation of text anddrawings.” '461 patent col. 5 ll. 18–23.

The patent explains that to improveaccuracy, the marking implement mayhave a tapered sleeve that terminates witha switch to detect the movement of a pentip when it is placed on the writing sur-face. '461 patent col. 7 ll. 31–38. Theswitch generates a signal that tracks themarking implement's position. ' 461 pat-ent col. 7 ll. 39–49. The signal may alsoidentify “a particular marking implementfunction or color, for example whetherthe marking implement is a red or bluepen, ... a thin line or a thick line, or ... aneraser.” ' 461 patent col. 7 ll. 50–55.

At issue in this appeal is the term“marking implement.” Claim 1 of the '461 patent includes the term:

A retrofittable apparatus for convertinga substantially planar surface into awriting surface for an electronic datacapture device, the apparatus compris-ing:

a unitary sensor array that securelyand rigidly fixes a relation between aplurality of sensors and that providesa tracking function to determine theposition of a marking implement onthe writing surface; and a means foraffixing the unitary sensor array to thesubstantially planar surface.

'461 patent col. 9 ll. 41–50 (emphasisadded). Dependent claim 12 recites amarking implement comprising “a sleevethat has an inner diameter that is adaptedto receive and securely retain a standard

marker; and a first switch that detectsmovement of a marker tip ....“ '461 patentcol. 10 ll. 27–35.

The district court construed “markingimplement” as “an implement that has amarker tip (and not a pen tip).” EPOS,802 F.Supp.2d at 50. It determined that,“while the specifications occasionallyreference a ‘pen’ and ‘pen tip,’ the total-ity of the specifications makes clear thatthe patentee was merely using thoseterms as synonyms for a dry-erase mark-er.” Id . (citing '461 patent col. 7 ll.31–37 (“The ... sleeve ... has an inner dia-meter that is adapted to receive ... astandard dry-erase marker. Thus, theherein-disclosed marking implement usesa marker.... The sleeve is tapered to fol-low the tapered contour of the pen.”)).

*6 Nothing in the '461 patent limits a“marking implement” to an implementwith “a marker tip (and not a pen tip).”As an initial matter, a pen or pencil-notjust a “marker” or an implement with a“marker tip”—can mark surfaces.Moreover, the specification interchange-ably refers to a “marking implement” as a“marker” and as a “pen.” '461 patent col.7 ll. 33–38; see also '461 patent col. 7 ll.54–55. It also refers to the marking im-plement's tip as a “pen tip.” Id. And itteaches that the marking implement canperform an “eraser function.” '461 patentcol. 10 ll. 46–49. Given these broad dis-closures, the district court erroneouslyconstrued “marking implement” to re-quire a “marker tip” and to exclude im-plements with a “pen tip.” Accordingly,we vacate the district court's constructionof “marking implement.”

The district court granted summaryjudgment of noninfringement based on itserroneous construction of the term, find-ing that Pegasus “essentially seeks to ex-tend the Patent to cover that which hasbeen expressly excluded by the Court's

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construction—an implement that has apen tip.” EPOS, 916 F.Supp.2d at 96–97.But because a “marking implement,” asused in the '461 patent, neither is limitedto a “marker” nor excludes a “pen tip,”we reverse the district court's grant ofsummary judgment.

C[11] The '051 patent is directed to a“graphic dataacquisition system” with a“retrofittable apparatus for converting asubstantially planar surface into an elec-tronic data capture device.” '051 patentcol. 3 ll. 17–20. The patent discloses a“fitting technique that allows rapid andefficient retrofit of a tracking assembly”to a planar surface, such as a whiteboard.'051 patent col. 4 ll. 48–55. This fittingtechnique “may be any technique ordevice that affixes the sensor array to thewriting surface.” '051 patent col. 5 ll.13–14. Indeed, the patent discloses “avariety of configurations” for attachment“by providing a variety of adapters and/orfasteners.” '051 patent col. 6 ll. 43–50,

figs. 2–7.

Figure 2 of the '051 patent shows“conventional methods” like “doublestick mounting tape or a temporaryfastener, such as Velcro .” '051 patentcol. 5 ll. 49–54. Figure 3 shows thesensor array mounted to a wall with abracket, which also may be used to se-cure the writing surface. '051 patent col.5 ll. 60–65. Figure 4 shows a bracketmounted to a wall, wherein the sensor ar-ray has a complementary channel thatslides onto a portion of the wall-mountedbracket projecting from the wall. '051patent col. 6 ll. 1–10. Figure 5 shows asensor array affixed to the writing surfacewith a clip-on bracket “that includes a U-shaped portion ... adapted to engage withthe upper edge of the writing surface.” '051 patent col. 6 ll. 13–19.

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The “temporary attachment” limita-tion in the '051 patent is at issue on ap-peal. Claim 1 is representative and recitesthis limitation:

*7 A retrofittable apparatus adapted forconverting a substantially planar sur-face into a writing surface for an elec-tronic data capture device, comprising:

a sensor array ...; and

a temporary attachment for remov-ably affixing said sensor array prox-imate to said substantially planar sur-face.

'051 patent col. 10 ll. 2–12 (emphasisadded).

The district court construed“temporary attachment” as “an elementthat can be removed from the device's‘retrofittable apparatus.’ “ EPOS, 916F.Supp.2d at 98.

On its face, claim 1 requires that the“temporary attachment” is an element ofthe “retrofittable apparatus.” So the“temporary attachment” is not somethingthat can be removed from the retrofittableapparatus. Instead, the retrofittable appar-atus has two components: a sensor arrayand a temporary attachment. The attach-ment is “temporary” not because themechanism itself can be removed fromthe sensor array, but because it is “for re-movably affixing” the sensor array to theboard. '051 patent col. 10 ll. 2–12.

The specification discloses that a keyaspect of the invention is that the sensorarray assembly “may be repeatedly re-moved and affixed to any substantiallyplanar surface.” '051 patent col. 5 ll.30–38. Figure 4 teaches a complementarychannel, and figure 5 teaches a clip-onbracket. ' 051 patent col. 6 ll. 6–7, 15–16.Both configurations provide easy and re-peatable affixation and removal. The

double-sided tape in figure 2 and themasking tape embodiments in the prosec-ution history enable the sensor array to beaffixed to and then removed from thewriting surface. '051 patent col. 5 ll.49–54; J.A. 801–802. The complement-ary channel, clip-on bracket, and tape are“temporary attachments” because theyprovide a mechanism by which the sensorarray can be affixed to and removed fromthe writing surface repeatedly withoutpermanently affixing an object to thewriting surface.

[12] The district court's constructionis incorrect because it reads out preferredembodiments. “[A] claim constructionthat excludes a preferred embodiment ...is rarely, if ever correct and would re-quire highly persuasive evidentiary sup-port.” See Anchor Wall Sys., Inc. v. Rock-wood Retaining Walls, Inc., 340 F.3d1298, 1308 (Fed.Cir.2003) (citationsomitted). Here, the district court's con-struction reads out preferred embodi-ments and it is not supported by “highlypersuasive” evidence. For example, thesensor array in figure 5 “is affixed to aclip-on bracket.” '051 patent col. 6 ll.13–19 (emphasis added). As another ex-ample, the sensor array in figure 4 is“associated therewith” to a bracket hav-ing a complementary channel to the wall-mounted bracket. '051 patent col. 6 ll.1–10. Thus, we vacate the district court'sconstruction of “temporary attachment.”

The district court granted summaryjudgment of noninfringement based on itsincorrect construction of the term. EPOS,916 F.Supp.2d at 98. The district courtdetermined that the EPOS Products couldnot meet the “temporary attachment” lim-itation because it was “undisputed thatthe EPOS Products use receiver unitsequipped with spring loaded clips ..., andthat those clips are permanently attachedto the receiver units.” Id. This determina-tion was based on an erroneous construc-

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tion. Accordingly, we reverse the districtcourt's grant of summary judgment ofnoninfringement.

IV*8 [13] Pegasus also appeals the dis-

trict court's grant of summary judgmentof noninfringement of the '371 patent un-der the doctrine of equivalents.

The '371 patent discloses a housingthat surrounds a drawing implement withan ultrasonic device mounted “within thehousing, remote from the drawing tip, yetin close proximity ... [and] the device be-ing for receiving or transmitting an inter-mittent ultrasound signal.” '371 patentcol. 2 ll. 47–64. The system may also in-clude an ultrasonic device for transmit-ting several intermittent ultrasound sig-nals, each with a different frequency, forindicating which of several implements isin use. '371 patent col. 4 ll. 1–10. Also“the intermittent ultrasound signals of thedifferent frequency are transmitted by thetransmitting device in a mode dependentmanner, thereby informing the processingsystem whether the operative tip is incontact with, or removed from, the boardor screen.” '371 patent col. 4 ll. 32–37.All of the claims at issue in the '371 pat-ent claim a handheld device for use witha board comprising several components,including an ultrasonic receiver or trans-mitter device for receiving or transmittingan “intermittent” ultrasound signal. ' 371patent cols. 22–26 (claims 1–3, 7,10–12).

The district court essentially adoptedPegasus's proposed construction of“intermittent” as “something that occursoccasionally, in a non-continuous man-ner, in a random or unpredictable man-ner, or at selected times.” EPOS, 916F.Supp.2d at 94–95. The district courtstated that “intermittent” could “referonly to those times when the user is act-ively using the device.” Id. Otherwise,

according to the district court, any deviceusing any form of ultrasound to transmitdata would satisfy the limitation. Id. Ap-plying its construction, the district courtdetermined that “it is clear that EPOS isentitled to summary judgment on Pegas-us's claim of literal infringement becauseit is undisputed that the EPOS Productsgenerate a continuous ultrasound signal.”Id. at 95. Pegasus does not appeal thesedeterminations.

The district court devoted only twosentences to its decision on infringementof the '371 patent under the doctrine ofequivalents. It reasoned that allowingcontinuous ultrasound signals to be equi-valents “would eliminate the intermittentlimitation entirely,” and that “the doctrineof equivalents cannot extend that far.” Id.(citing Planet Bingo, LLC v. GameTechInt'l, Inc., 472 F.3d 1338, 1344(Fed.Cir.2006) and Warner–Jenkinson v.Hilton Davis Chem. Co., 520 U.S. 17, 29,117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)).

[14] When addressing the doctrine ofequivalents, a court must ask whether anasserted equivalent is an “insubstantialdifference” from the claimed element, orwhether it matches the “function, way,and result of the claimed element.” Deere& Co. v. Bush Hog, LLC, 703 F.3d 1349,1356 (Fed.Cir.2012) (quotingWarner–Jenkinson, 520 U.S. at 40).“Courts should be cautious not to short-cut this inquiry by identifying a ‘binary’choice in which an element is eitherpresent or ‘not present.’ “ Id. at 1356; seealso Brilliant Instruments, Inc. v. Guide-Tech, LLC, 707 F.3d 1342, 1347(Fed.Cir.2013).

*9 Here, the district court “shortcut”the inquiry by identifying a binary choice(continuous or intermittent) that is notcompelled by the '371 patent and the re-cord evidence. The district court's de-cision does not consider the functioning

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of the EPOS Products as part of its de-termination on infringement by the doc-trine of equivalents. Additionally, the de-cision does not consider Pegasus's expertdeclaration explaining why the EPOSProducts' signals are equivalent to theclaimed intermittent ultrasound signal.The district court should have more thor-oughly considered whether a reasonablejury could conclude that intermittent andcontinuous signals are equivalent, ratherthan just “shortcutting” its analysis. Ac-cordingly, we vacate the district court'sgrant of summary judgment of nonin-fringement under the doctrine of equival-ents so that the district court may recon-sider this issue on remand.

VWe vacate the district court's con-

structions of “drawing implement,”“given time interval,” “marking imple-ment,” and “temporary attachment,” andthe district court's grant of summaryjudgment of noninfringement of the '371patent under the doctrine of equivalents.We also reverse the district court's grantof summary judgment of noninfringementregarding the '051, '565, '461, and '742patents and remand for proceedings con-sistent with this opinion.

VACATED–IN–PART, RE-VERSED–IN–PART, AND RE-

MANDEDNo costs.

FN* Randall R. Rader, who re-tired from the position of CircuitJudge on June 30, 2014, did notparticipate in this decision.

C.A.Fed. (Colo.),2014.Epos Technologies Ltd. v. Pegasus Tech-nologies Ltd.--- F.3d ----, 2014 WL 4377573(C.A.Fed. (Colo.))

END OF DOCUMENT

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